Welcome to Skilled in the Art. I'm Law.com IP reporter Scott Graham. Today I've got a look at Quinn Emanuel Urquhart & Sullivan's big trademark suit against the United States Soccer Federation, though I'm wondering if the firm is offsides in suing a former client. Plus, there's only one thing growing faster than the e-cigarette industry, and that's the patent litigation its sprouting all over the country. Many, many law firms have a piece of the work—but one seems to be ruling the roost.
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Quinn Evens the Field
Two nonprofits that have worked together to promote soccer in the United States are getting a divorce, with custody of the name “U.S. Soccer Foundation” in the balance.
And the law firm suing on behalf of the United States Soccer Federation Foundation appears to be pulling something of a switcheroo on the history of the mark.
The foundation sued the United States Soccer Federation Inc. on Thursday, seeking a declaration of rights over the name U.S. Soccer Foundation.
In the foundation's telling, it’s been using the name to support youth soccer in the United States, particularly among disadvantaged kids, for more than 20 years.
But the federation—the governing body that oversees the U.S. national teams —registered the name and logo with the U.S. Patent and Trademark Office in the late 1990s and recently told the foundation to stop using them.
That led to Thursday’s complaint, filed in the District of Columbia by Quinn Emanuel Urquhart & Sullivan. It alleges “upon information and belief” that the federation has never used the marks in commerce, and that the two groups have “shared the understanding that the foundation is the actual owner.”
“Although the federation is listed in the USPTO’s records as the owner of the above registrations and applications, at no time was the federation ever the actual owner of the Foundation Marks,” states the complaint filed by Robert Raskopf, the chair of Quinn's sports litigation practice, and three other Quinn attorneys.
I reached out Thursday afternoon to the federation and haven't heard anything back. But I'll bet they're none too pleased to see their former law firm on the complaint. According to PTO records, Quinn Emanuel partner Alan Blum—now deceased—submitted renewal applications in 2009 and 2010 attesting that the federation did own the marks and had used them in commerce.
The foundation describes itself as the major charitable organization of soccer in the United States. The federation is threatening to “hijack” the trademarks, likely in anticipation of the World Cup coming back to the states in 2026, the complaint alleges. It seeks a declaration of non-infringement, an order canceling the federation’s registrations, and an award of damages for unfair or deceptive trade practices.
Lawrence Siskind, a trademark attorney at Coblentz Patch Duffy & Bass who’s not involved in the case, said a key issue is likely to be abandonment. If there's no evidence the federation used the marks over the last three years, that could create a legal presumption that the marks have been abandoned. “It can be rebutted,” he said, “but the longer the time period that’s gone by, the harder it is to rebut.”
Another Board Dispute in Silicon Valley
If I say Lucy Koh to you, what comes to mind? Apple v. Samsung? Qualcommlitigation? “No-poach” class action? Her name is practically synonymous with the tech industry's legal docket.
Last week the San Jose federal judge decided her latest big patent fight, this time involving … gypsum board?
Yep, even Silicon Valley still has the occasional old economy patent dispute to sort out. Pacific Coast Building Products v. Certainteed Gypsum involved double-sided gypsum boards held together with a special noise-attenuating glue and used in place of drywall. Sacramento-based Pacific Coast Building Products markets a version called Quiet Rock that it touts as pliable enough to be easily scored and broken down into useful pieces on construction sites.
The company sued French manufacturer Saint-Gobain, whose subsidiaries market a similar product. The problem for Pacific Coast is a limitation in its 9,388,568 patent that the board have a “scored flexural strength” of “about 22 pounds per half-inch thickness of the structure.”
Saint-Gobain's Latham & Watkins attorneys argued that limitation is indefinite. Koh held a claim construction hearing Nov. 29 and by day's end agreed. For one thing, different installers will score the board differently, depending on anything from the type of knife used to the installer's level of fatigue. Nor does the patent explain how to convert the flexural strength measurement to to the 5/8-inch thickness used by both companies' products, Koh wrote in a 24-page page order.
Pacific Coast, represented by Sheppard Mullin Richter & Hampton, argued that Saint-Gobain's own expert tested 60 sample products using various industry-standard testing methods and came up with an average strength of 23.5 pounds. That proved with “not just reasonable certainty, but rather exact certainty” that a person of skill in the art would understand the strength limitation, the company argued.
It didn't persuade Koh. “The problem with plaintiff’s argument is that nowhere in the claim does it say to average the scored flexural strength value of all scored samples,” she wrote.
Latham's team was led by partners Matt Moore, Rick Frenkel and Adam Greenfield and associates Reba Rabenstein, Abby Rives and Diane Ghrist.
Who Got the Work?
E-Cigarette maker Juul Labs is making a habit of retaining Sterne, Kessler, Goldstein & Fox in a wide-ranging patent infringement campaign.
A little over a year since being spun out from Pax Labs, Juul has captured some 70 percent of the e-cigarette market and has been valued as high as $15 billion. It's facing a raft of competitors that it describes as copycats, and has launched two dozen patent suits in federal courts across the country and the International Trade Commission over the last two months. The suits allege infringement of Juul's patented cartridges and vaporization systems, among other things. Juul also accuses its rivals of marketing to minors, a charge that's been leveled at Juul in the past.
Juul sued in the ITC on Oct. 4, naming 18 proposed respondents based in the U.S., China, France and Uruguay. It struck again in the ITC Nov. 8, this time naming 24. The infringing products "not only violate our intellectual property, but are dangerous, bad for public health, and do not share our mission of improving lives of adult smokers," the company said in a written statement.
Sterne Kessler's team for Juul is led by Daniel Yonan, chair of the firm's ITC practice group; Michael Joffre, co-chair of the firm's appellate practice; and partners Paul Ainsworth, Uma Everett, Nirav Desai and Jonathan Tuminaro.
The ITC hasn't instituted proceedings. It has however solicited public comment on how an exclusion order would affect U.S. consumers, as well as “any public health, safety, or welfare concerns.”
Proposed respondents Myle Vape and Shenzhen Joecig Technology Co. argued in a Nov. 21 filing that Juul's efforts to crack down on youth vaping are insincere, and that adults looking to kick nicotine should have a choice of e-cigarettes, including those that deliver less “nicotine strength.”
Evan Langdon and V. James Adduci of Adduci, Mastriani & Schaumberg and James Shlesinger of Shlesinger, Arkwright & Garvey represent Myle Vape and Shenzhen Joecig.
Proposed respondent Eonsmoke adds that the ITC should simply defer to the Food and Drug Administration, which is cracking down on e-cigarette makers and has promised to seize unlawfully marketed products. Husch Blackwell partner Beau Jackson and associates David Gerasimow and Paul Smelcer represent Eonsmoke.
Sterne Kessler also is representing Juul in federal court suits in the Central and Northern Districts of California; the Eastern and Western Districts of New York, the Middle and Southern Districts of Florida; the Northern District of Illinois; the Southern District of Texas; and the districts of New Jersey, Minnesota, Connecticut, Colorado and Delaware.
Procopio, Cory, Hargreaves & Savitch partners Victor Felix and Robert Slossare co-counsel for Juul in the California cases. Schnader Harrison Segal & Lewis partner Lisa Rodriguez provides counsel in the New Jersey suits. Schnader parnter Theodore Hecht and associate Jessica Lau are co-counsel in the Eastern District of New York. Bush Ross partners David Banker and Bryan Hull signed onto the complaints in Florida. Paul stack of Stack & O'Connor is co-counsel for Juul in Illinois. Partners Courtland Merrill and Daniel Hall and associate Peter McElligott of Anthony Ostlund Baer & Louwagie are providing counsel in Minnesota. Phillips Lytle partner William Christ signed onto Juul's complaint against The ZFO in the Western District of New York. Partner Robert Langer and counsel Matthew Brown of Wiggin and Dana provide counsel in Connecticut. Gray Reed & McGraw partners Eric Tautfest and Jared Hoggan and counselDavid DeZern are co-counsel in Texas. Partner Adam Poff and associate Pilar Kraman of Young Conaway Stargatt & Taylor are on board in Delaware, and Lewis Brisbois Bisgaard & Smith partners Jeffrey Kass and George Matavaprovide counsel in Colorado.
A few public appearances have been entered for a handful of federal court defendants. Kutak Rock partner Michael McDonnell of Kutak Rock has filed papers for The Electric Tobacconist in New Jersey stating that the parties have reached a settlement in principle. Husch Blackwell partner Dwayne Stanley and Mark Kriegel of The Law Office of Mark Kriegel repesent Eonsmoke in the same New Jersey action, while Thompson Hine partner Eric Heyer and associate Riccardo DeBari represent Vapor4Life. Baker & Hostetler partner Jason Oliverrepresents Flair Vapor in a separate New Jersey action.
Mary Bielaska of Zanicorn Legal represents Myle Vape in the Eastern District of New York. Robert Bursky represents Bo Vaping and MMS Distribution in a separate ED-NY suit.
Phew, that's a lot. And this litigation is only getting started.
That's all from Skilled in the Art this week. I'll see you all again on Tuesday.